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IP Ownership and the Valley of Death

Posted on Aug 16, 2012 by Dr. Julie Nixon  | 0 Comments

There is a clear push on to translate the academic research that goes on in our fine institutions into something commercially viable. IP created is the key to success here, but we have to ask who actually owns the IP coming out of research? The very nature of academic research and different policies among different universities can make this confusing to say the least.

On the 2nd of July oral evidence was given as part of the ongoing inquiry by the Commons Science and Technology Select Committee into the commercialisation of research. The inquiry is entitled “Bridging the Valley of Death” – a reference to the lack of funding available for translating research into commercial application.

A couple of publications to have come out of this ongoing inquiry have caught my eye.

The first is written evidence submitted by David Connell entitled “Innovation Myths and Lead Customers: Game Changing Policies to Improve the Commercialisation of Research”.

He makes the excellent point that externally funded research projects are staffed by students or post-docs on short term contracts. Development of commercially viable IP takes time and core staff have a tendency to move on quickly (often out of science altogether!). Combine this with pressure to write academic papers and teach means that R&D is often on the back burner. “Normal duties” (I will get to this later) don’t seem to encourage innovation.

The second publication is an advice paper published by The Royal Society of Edinburgh back in February in response to the above inquiry.

This paper raises the introduction of commercial impact into the Research Excellence Framework (REF) exercise for universities as a step forward in bringing commercialisation to the fore. There has to be a balance struck of course between promoting excellence in teaching and fundamental research in these institutions with developing commercial impact and commercially aware graduates.

Both papers raise the problem of ownership in IP as a barrier to the commercialisation of research. The Royal Society paper notes that each University has its own policy for handling IP. Companies interested in commercialising research can end up in complex negotiations. Mr. Connell notes the problems with IP management throughout a project or successive projects where many individuals and corporate partners are involved. Where academics collaborate with industry, the agreements must be carefully negotiated if potential is to be maintained for future spin outs or licensing deals.

In the UK section 39 of the Patents Act 1977 essentially states that ownership of rights in an invention rests on whether the invention was made in the course of carrying out normal duties and whether such an invention could reasonably be expected to arise from the carrying out of normal duties. It is here that UK universities inevitably hit a grey area. Researchers rarely enter into their academic career based on the promise of financial rewards arising from their work. Often any potential commercially viable innovation has been stumbled upon by pure chance and luck, not as the specific result of research carried out under “normal duties” which as outlined previously tend to revolve around teaching and academic publications. Although IP ownership is certainly just one point in “Bridging the Valley of Death” it certainly is a crucial one. There is an argument about who is best to exploit the IP, the commercially unaware academic/student or University technology transfer offices who can demand large percentage returns from exclusive licenses granted. The University of Glasgow  last year implemented “Easy Access IP”, aimed at increasing engagement between universities and industry by fast tracking the transfer of knowledge and expertise to the best potential commercial partner (in terms of social and economic impact) without cost. The way forward perhaps?

Julie Nixon

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